Informative One Day, Non-Informative the Next

PTAB Decision:  Ex parte Jung, Appeal No. 2016-008290 (P.T.A.B. March 22, 2017)

Background:  The USPTO designated Ex parte Jung, Appeal No. 2016-008290 (P.T.A.B. March 22, 2017), as “informative” on July 10, 2018, but then a month later, on Aug. 7, 2018, “de-designated” the case on the grounds that the decision was being misunderstood.

The claims at issue related to a method for playing back a scene, including “at least one of:

1. a precedence relation… and
2. a connection relation…including at least one of
   1. a connection branch and
   2. a contents connection list...”

Jung argued that the claim was not obvious because the references did not teach at least one of a connection branch and at least one of a contents connection list. Jung, at *3-4.

Outcome:  The PTAB turned to the venerable Federal Circuit decision in SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004). In SuperGuide, the Federal Circuit distinguished between a list separated by “and” and a list separated by “or,” and held that in a list separated by “and,” “the plain and ordinary meaning is the conjunctive phrase ‘at least one of A and at least one of B.’ 358 F.3d at 887.” Jung, at *8.

The PTAB concluded that the ordinary meaning of “and” applied, and the specification did not “reveal any clear definition or disavowal which would compel a disjunctive construction and distinguish SuperGuide[.]” Jung, at *9. The PTAB agreed with the applicant that the references did not teach “at least one of a connection branch and a contents connection list,” and that the examiner’s obviousness rejections lacked support. Jung, at *11.

Although it looked like PTAB was going in appellant’s direction, the PTAB then explained that this conjunctive interpretation lacked written description support in the specification because “the Specification discloses only an example of ‘or,’ not ‘and.’” Jung, at *10. Thus, the PTAB entered a new ground of rejection against appellant’s claims. 

In a practical point to appellant and patent practitioners generally, the PTAB suggested potential amendments to the claims to overcome the written description support rejection (though perhaps that would have put the appellant back within the scope of the obviousness rejections):

1) at least one of A or B;

2) at least one of A or at least one of B; or

3) at least one selected from the group of A and B.

Jung, at *14.

At least since the Federal Circuit’s SuperGuide decision in 2004, the plain meaning of “at least one of A and B” has been interpreted to require “at least one of A and at least one of B.” But some practitioners apparently thought the PTAB was announcing a new policy/law by designating Jung. To avoid further confusion, the USPTO decided to de-designate Jung:

It has come to PTAB’s attention that the decision has not been read as intended. For example, the designation was not intended to reflect new or changed policies with respect to claim construction. As a result, in order to avoid any confusion, the decision has been de-designated and removed from the list of informative decisions. The case remains a routine decision of the Board[.]

See https://content.govdelivery.com/accounts/USPTO/bulletins/2041ccd

Prosecution Takeaway:  SuperGuide and Jung demonstrate how the patent drafter’s selection of words, even seemingly minor ones, may have a significant impact on how a claim is construed or whether it is found patentable. When drafting patent applications with the phrase “at least one” followed by a list, not set apart by a noun, using “and” in the list means the claim will be construed conjunctively to require each item listed because “at least one” modifies each category in the criteria list. For example, per SuperGuide, “at least one of a W, a X, a Y, and a Z” will require at least one W and at least one X and at least one Y and at least one Z. To encompass a scenario where only one of the items listed is required, the practitioner could use “or” instead of “and.” That was PTAB’s proposal 1) above.

As variation, practitioners may end a list with “and/or” instead of “and” or “or”, e.g., “at least one A and/or at least one B.” But practitioners should be sure to describe an “and/or” example in the specification to include both the “and” scenario and the “or” scenario, to support the desired claim construction.

A more conservative approach might be to recite “At least one widget chosen from A widgets and B widgets.” This construction should render unnecessary the use of “mixture” in the following list:  “At least one widget chosen from A widgets, B widgets, and mixtures thereof.”

Another approach is to present an independent claim to embodiment 1 (at least one A widget) and another independent claim to embodiment 2 (at least one B widget). Two independent claims insures a claim to A widgets alone and another to B widgets alone.

None of the examples above suggests using “at least one widget selected from the group consisting of A widgets and B widgets.” This is because such a Markush group (using “consisting of”) may be construed to mean that the claim is closed to any widget other than A and B widgets.  See. e.g., Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350 (Fed. Cir. 2016).